The Unified Patent Court (UPC)
What is the UPC?
The Unified Patent Court (UPC) is an international court. This provides a centralised forum able to decide on infringement, validity and prior use matters for all patents granted by the European Patent Office (EPO) and corresponding supplementary protection certificates (SPCs) in force when the UPC opens, as long as those rights are not opted out of the jurisdiction of the UPC.
The UPC will also be able to decide on matters relating to provisional protection provided by all European patent applications, some licencing disputes relating to non-opted out patents granted by the EPO and corresponding SPCs, and decisions made by the EPO regarding European patents with unitary effect (the so-called “Unitary Patent”, or “UP”). Please see below for details of UPs.
How is the UPC different to the current system?
The current system for infringement and validity matters, provisional protection and licencing disputes is for each to be handled by national courts. This means that if a matter is relevant in more than one country, to fully address that matter, it requires court proceedings in multiple countries. The UPC will reduce the number of court proceedings by having a single court that covers multiple countries.
For countries that are not part of the UPC system and for rights that have been opted out of the UPC’s jurisdiction, it will still be necessary for the above matters to be handled on a national basis.
What reach does the UPC have? / What is the UPC’s jurisdiction?
The UPC is a court “common to” the EU member states that have ratified the UPC Agreement. This means the UPC will have jurisdiction over non-opted out patents granted by the EPO, corresponding SPCs and patent applications pending before the EPO in at least 17 EU member states. This currently covers France, Germany and Italy along with the other EU member states listed with a notification date here. The remaining EU member states other than Croatia, Poland and Spain are all intending to take part in the UPC, but have yet to ratify the UPC Agreement. Once each country ratifies the agreement, the jurisdiction of the UPC will expand to cover the respective country. The UK will remain outside the jurisdiction of the UPC.
Within a transition period running from when the UPC opens, which has an initial duration of seven years, national courts and other national authorities also have jurisdiction over non-unitary patents granted by and patent applications pending before the EPO. This jurisdiction will be in parallel to the UPC’s jurisdiction allowing parties a choice of forum to use. Once the transition period ends, the national courts will cease to have jurisdiction for matters over which the UPC has jurisdiction other than being able to continue to handle existing matters.
Can my UK patent attorney continue to represent me for UPC cases?
UK qualified patent attorneys who are also qualified to act before the EPO and have the necessary litigation training will be able to represent clients at the UPC. In practice, this means most of the UK profession of patent attorneys will continue to be able to represent clients before the UPC. Whether a patent attorney, solicitor, barrister or team is best placed to represent a party in proceedings before the UPC can be determined by the matter at hand and the experience within the team. This is something your patent attorney will be able to advise you on.
What is the UPC opt-out? / What is the effect of the opt-out?
During the “Sunrise period” it will be possible to opt out all European patents, published European patent applications and SPCs other than European patents with unitary effect (UPs) from the jurisdiction of the UPC. This will mean only national courts and other national bodies will have jurisdiction over the relevant part(s) of an opted-out European patent and European patent applications. Such opted-out patents and patent applications will be treated as though the UPC did not exist.
Opting out a European patent will automatically opt out an SPC based on that European patent when that SPC has been granted prior to the date of filing the opting out of the European patent.
It is not possible to opt out a UP.
Why can’t cases be opted out of the UPC yet, and why are there no UPC cases?
While the necessary legal steps have taken place to bring the UPC to life, the court is not yet operating fully. To allow judges and other staff to be recruited, computer systems to be set up and the various bodies within the court to become established, the UPC is in a provisional application period. This period started in late January 2022, and, as of 6 April 2022, is expected to last “until the last quarter of 2022 or early 2023” (source: Unified Patent Court Preparatory Committee as stated here). During this period, it will not be possible to opt out and the UPC will continue to have only limited operational abilities.
When will it be possible to opt out patents and patent applications from the UPC jurisdiction?
It will be possible to opt out when the Sunrise period begins. The Sunrise period is a separate period from the provisional application period and the transition period, as shown below.
It will continue to be possible to opt out European patents, European patent applications and SPCs during the transition period, which is intended to be no shorter than seven years from when the UPC becomes fully operational, and can be extended up to a maximum period of 14 years.
When will the Sunrise period start?
The Sunrise period will start shortly after the German ratification of the UPC Agreement (as the last required ratification) is formally deposited with the Council of the European Union. It is generally considered this will take occur in the second half of 2022, running at the same time as the latter stages of the provisional application period.
How long will the Sunrise period last?
The Sunrise period will last three to four months. The UPC will start operating fully at the end of the Sunrise period, which is defined in the UPC Agreement as the “first day of the fourth month” after the last necessary ratification is deposited. This means the exact length of the Sunrise period could vary based on the exact date the German ratification is deposited. We would expect the date of deposit to be picked carefully though, in order to maximise the length of the Sunrise period.
Will there be a fee to opt-out my patent or patent application from the UPC?
No; there will be no official fee for opting out a patent, patent application or SPC.
Should I opt out my patents, patent applications and/or SPCs?
There are pros and cons of opting out or leaving patents, patent applications and SPCs ”opted in” to (so within) the UPC’s jurisdiction. Ultimately, the decision likely turns on whether there is a wish to be able to enforce centrally while being comfortable with the chance the patents and/or SPCs are also open to being invalidated centrally.
Whether to opt out or stay opted in will likely depend on the number of patents and SPCs a business has, the importance of those rights to the business and appetite to test a new system. If you would like advice on whether to opt out patents, patent application and SPCs and which to opt out, please contact us here, via firstname.lastname@example.org or ask your usual GJE contact.
How do I opt out?
An opt out application will need to be filed should you wish a European patent, patent application and/or any corresponding SPCs to be opted out from the jurisdiction of the UPC.
GJE has developed an automated tool to enable any number of cases to be opted out, quickly and easily. The tool can take input from any patent management system or simply a list of the relevant cases. For more information contact us here, via email@example.com or contact your usual GJE contact.
Each opt out application will need to identify the relevant European patent or patent application and any corresponding SPC. An opt out application should also include the name and address of each owner of the European patent, patent application or SPC.
An opt out application can only be legitimately filed by or on behalf of the true legal owner(s) of a patent or patent application. Since each true legal owner is not always the registered owner, where the opt out application is filed by or on behalf of a party other than the sole registered owner of the relevant European patent, patent application and/or any corresponding SPCs, a declaration will need to be filed. The declaration will need to confirm that this party is entitled to be named a registered owner of the relevant European patent, patent application and/or any corresponding SPCs.
A request to opt out a European patent, patent application and/or any corresponding SPCs will only be accepted as long as the relevant right is not subject to proceedings before the UPC before the opt out application is entered on to the UPC register.
For SPCs, it will not be possible to leave an SPC in the UPC’s jurisdiction when the SPC was granted prior to the date of filing of an opt out application on the corresponding European patent. For SPCs granted later than an opt out application on the corresponding European patent is filed, the opt out applies automatically to the SPC.
Who can opt out?
In practice, anyone can submit an opt out application and the register will be updated.
However, an opt out application can only be legitimately filed by a representative for one or more owners of the relevant European patent, patent application or corresponding SPC, or by one or more of the owners. Where a European patent or patent application is owned by multiple parties, a declaration stating that all owners have given permission for the patent or patent application to be opted out will be required for the opt out application to be legitimate.
If you are worried about third parties changing the register to indicate your rights have been opted out, we are able to monitor the submissions for you.
What happens if an opt out application is filed without permission?
The UPC preparatory committee have confirmed that there will be a process in place for making corrections when an opt out application for a European patent, patent application and/or corresponding EPC is filed by an unauthorised party.
Once opted out, can I opt back in? / Can a patent, patent application or SPC be opted back in once opted out?
Yes; it will be possible to undo an opt out in order to opt in a European patent, patent application and/or corresponding SPC (but only once). This is achieved by filing an application to withdraw an opt out. An application withdrawing an opt out will need the same details, information and content as needed for an opt out application.
Will there be a fee to withdrawing an opt-out?
No; there will be no official fee for withdrawing an opt out.
Can a case be opted out and opted in multiple times?
No; once a European patent, patent application and/or SPC has been opted out once, it will only be possible to withdraw the opt out to opt in the case to the UPC jurisdiction. It will not be possible to opt out a patent a second time (or to withdraw such an opt out a second time).
How does Brexit affect the UPC?
There will now be limited effect on the UPC caused by Brexit. Suitably qualified UK patent attorneys will still be able to act as representatives before the UPC and will have the same rights before the UPC as they had before Brexit.
The UK was initially going to take part in the UPC, but this is no longer happening. This means that the part of the UPC that was to be based in the UK will now be based elsewhere.
The Unitary Patent (UP)
What is a UP?
A Unitary Patent, also referred to as a UP, is a European patent with unitary effect. In practice, a UP is a single patent that will offer unitary protection in multiple EU countries in which the same set of claims will be applicable. The UPC will have exclusive jurisdiction over infringement and validity proceedings for UPs, so these will only be enforceable and able to revoked centrally, but can be licensed on a country-by-country basis.
Each UP will be created on request by the EPO from a European patent application granted by the EPO. Whether to make use of the availability of a UP will depend on whether a single patent is wanted covering all the countries available for a UP at once, or whether to be able to select and enforce patents individually in one or more of those countries through the continued use of traditional validations.
UPs will be available from the date on which the UPC starts operating fully. Transitional provisions to help right holders prepare for the start of the UP system will operate once the Sunrise period starts. Please see above for details of the Sunrise period.
What countries will the UP cover?
The UP will offer patent protection in all countries that have ratified the UPC Agreement. When the UP system is running this will mean each UP will offer joint and simultaneous protection in at least France, Germany and Italy along with the other EU member states listed with a notification date here.
It is anticipated the number of countries taking part in the UP system will expand over time to all EU member states except for Croatia and Spain. Once a UP is created, the countries it covers will not change, meaning only the countries inside the UP system when a UP request is filed will be included in the resulting UP. It will not be possible for a UP to cover the UK.
I have different claims in different UP countries, can I get a UP?
No; to be eligible for a UP, the European patent on which unitary effect is to be requested must have the same claims for all UP countries.
European patents can have different claims applicable to different countries in the event there is a conflict with a national right of an earlier date. It is not possible to get a UP for such a European patent.
I have withdrawn a designation of a UP country; can I still get a UP?
No; to be eligible for a UP, the European patent on which unitary effect is to be requested must designate all the UP countries.
Should I file for a UP or a European patent (or national patents)?
In order to be granted a UP you will already need to have filed a European patent application. At grant of the European patent application you will still be able to make use of the traditional “bundle” of rights by validating the European patent in the countries that are EPO member states. A UP will be available as an alternative choice to validations in the countries covered by UPs at the time a request for a UP is made. Unless excluded by virtue of the national filing processes (such as a patent only being available in France through the EPO based on a PCT application), national patents can still be pursued in parallel or as alternatives to a European patent.
Regardless of the strategy pursued, there are pros and cons. As with opting out or staying opted into the UPC jurisdiction, ultimately, the decision to pursue a UP likely turns on how important the patent is to your business relative to whether you wish to be able to enforce centrally while being comfortable with the chance your patents and/or corresponding SPCs are also open to being invalidated centrally. The choice between national patents and a European patent, with or without requesting a UP remains the same as it does without the UP and UPC systems in place.
The decision on whether to request a UP will also be affected by costs. If you typically expect to only validate your European patents in three or four countries, while it will depend on which countries you validate in, the renewal fees payable in each country will likely be cheaper by using the traditional validation system than the renewal fees that will be incurred on a UP. Not requesting a UP based purely on the cost of future renewal fees would sacrifice the additional geographical scope a UP would offer you for a cost similar to that of paying renewal fees for around four countries under the traditional validation system, so there will still be a decision to make.
Whether to request a UP from your European patents when they grant will likely depend on the importance of those rights to your business, the number of patents and SPCs you have or may try to obtain and your appetite to test a new UPC system. If you would like advice on whether to request a UP, please contact us here, via firstname.lastname@example.org or ask your usual GJE contact.
How do I get a UP?
A UP is obtained by filing a request for unitary effect at the EPO within a month of the date of mention of grant of a European patent application. This will only be possible from the start of the Sunrise period for the UPC (please see above for details of the Sunrise period).
It will be possible to request unitary effect based on a granted European patent application that is not opted out of the UPC jurisdiction. However, when the request for unitary effect is granted by the EPO, the opt-out will be automatically withdrawn by the UPC authorities.
As noted above, it is not possible to opt out a European patent when a UP has previously been obtained (i.e. where a request for unitary effect has been accepted).
What are the transitional provisions to phase in the UP system?
There are two formal mechanisms provided for in the transitional provisions, which are independent of, but complementary to, each other. These are intended to the make adoption of the UP system easier and to allow unitary effect to be requested on as many European patents as possible.
One mechanism is that, only during the Sunrise period, it will be possible to file a request for unitary effect on any European patent application on which a notice of allowance has been issued (also referred to as an “intention to grant” communication or a “communication under Rule 71(3) EPC”). If this mechanism is used, the unitary effect will only be finalised when the UP system and UPC start operating fully at the end of the Sunrise period.
The other mechanism is that, only during the Sunrise period, the EPO will make it possible to request delay of issuance of a decision to grant communication. This is the communication that contains the date of mention of grant of the relevant European patent, which is what sets the period for requesting unitary effect (this being a one month period from the date of mention of grant).
The request to delay issuance of a decision to grant communication can be filed on any European patent application on which a communication under Rule 71(3) EPC has been issued, but where no response has yet been filed to that communication approving the text for grant. A successful request to delay issuance of the decision to grant will result in the EPO only issuing the decision to grant after the UP system and UPC start operating fully at the end of the Sunrise period.
Other, non-formal, mechanisms are available for delaying grant of a European patent application. These include disapproving the text for grant or making use of the EPO’s further processing provisions. Such non-formal mechanisms should only be used in discussion with your patent attorney.
Are there special translation requirements for a UP? / What are the translation requirements for a UP?
To accept a request for unitary effect, when the original specification is in English, the EPO will require the full specification to be translated into any official language of an EU member state. When the original specification is in French or German, the EPO will require the full specification to be translated into English. The translation must be filed with the request for unitary effect.
Which language to choose for the translation could turn on where an applicant is based, the translation costs or the availability of the specification in a suitable language due to there being a parallel patent or patent application elsewhere that is already in a relevant language. Every European patent has claims in English, French and German from grant, so the claims at least will already be available in a suitable language, which may affect what language is chosen for the translation.
As an example, a Spanish translation of the full specification is required for validating a European patent in Spain. Therefore, if unitary effect is requested in addition to validating the patent in Spain (which is outside the scope of a UP), clients can make use of their existing Spanish translation of the specification to satisfy the translation requirements for the UP.
The translation requirements will be in place during a six-year transitional phase. A decision on whether to continue requiring translations, and whether to allow machine translations as the only translation on file will be made towards the end of the transitional phase. It is possible the transitional phase will be extended up to a full term of 12 years if translations are still considered necessary towards the end of the initial six-year term.
Can a machine translation be used to meet the UP translation requirements?
Yes; however, this is not encouraged by the EPO. This is because the regulation governing the translation requirements for Unitary Patents states non-machine (i.e. human prepared) translations should be used at least during a transitional period that will be in place when the UP system comes into effect.
The EPO, as the recipient of all requests for unitary effect, will not be checking the linguistic detail, grammar or wording of a translation. Instead, the EPO will only carry out a formal check that the translation is present, in the language indicated in the request for unitary effect, and is complete with all elements included, such as the same drawings and an identical number of claims. As such, an objection based on a machine translation having been filed instead of a human translation will likely only be raised if it is immediately apparent the translation is a machine translation.
Due to the short, non-extendable, timeframe of one (1) month the EPO will set for correcting any deficiency in the translation (or any other deficiency in a request for unitary effect), filing a machine translation will present a risk since translations take time to prepare. It is anticipated some will consider this to be an acceptable level of risk though.
The requirement for a translation to be provided at all is one aspect that will be reviewed towards the end of the transitional phase, which is due to last at least six years. At that stage, there will be a review of whether translations still need to be provided with a request for unitary effect.
Will traditional validations still be available in addition to a UP or instead of a UP?
Yes; since a UP will be limited to the EU countries that have ratified the UPC Agreement, there will be many other EPC countries where a UP is not available. In those countries, patent protection will continue to be available using the same validation mechanism as is used currently.
If a UP is not wanted, it will also still be possible to validate a European patent in one or more of the countries covered by the UP system. However, it will not be possible to have a UP and a parallel validation in countries covered by the UP system.
What is the cost of a UP?
There will be no official fee for requesting unitary effect. As is typical for validations, your service provider will likely charge you a fee for filing a request for unitary effect on your behalf, and there will also be fees associated with preparing the necessary translation. As is the case for traditional validations, there will be renewals fees payable on an annual basis for each UP following a successful request for unitary effect.
This means that the decision on whether to file for a request for a Unitary Patent or a European Patent can have significant cost consequences over the life of the patent. In contrast to the current system, the owner of a UP will not have the option to selectively abandon certain countries covered by the UP in order to reduce the annual renewal fees due meanwhile maintaining the patent in force in other countries covered by the UP.
What are the renewal fees for UPs?
The renewal fees for a UP are similar to what would be due if maintaining a patent in each of the top four most popular EPO validation countries (namely Germany, France, the Netherlands and the UK). The official renewal fees for UPs start quite low and increase each year the UP is kept in force ranging from EUR 35 to EUR 4,855. Renewal fees are payable to the EPO before grant in the usual manner. After grant, renewal fees for a UP are also payable centrally to the EPO. The UP renewal fees are based on the filing date of the patent application, so it is likely the lowest renewal fees will not be applicable in most cases due to the time it takes to get a European patent application granted. The first official renewal fees payable for a UP will therefore likely be in the range of EUR 315 to EUR 815. A full list of the official UP renewal fees can be found here.